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Judgment
V. Ravi, Technical Member
The applicants are seeking the removal from the register, the trade mark No. 458707 in Class 2 registered as of 18th August, 1986 in respect of
SUNLAC"" for paints, varnish, lacquers, thinners and primers which according to them was secured illegally and on the basis of which they secured
interim injunction against the applicant from the Vacation Judge by concealing material facts to the Hon'ble Court.
Being a transferred matter, the subject appeal is required to be decided under the repealed Trade and Merchandise Marks Act, 1958. The facts giving
rise to this application are briefly stated below:
a. The applicants are carrying on the business of manufacturing and marketing paints, NC. Putty and other cognate goods under the trade mark
SUNLAC since 1969-70. The applicant is thus the original and true proprietor of the impugned mark ""SUNLAC"". By virtue of its continuous use it has
acquired tremendous reputation and goodwill in the market.
b. The respondent herein cannot be the proprietor of the impugned mark either on the date of its adoption or on the date of the filing of the application
for registration as he was fully aware of the applicants trade mark 'SUNLAC'. Therefore, Section 18(1) of the Act is a complete bar to the
registration of the impugned mark.
c. To acquire legitimacy for adoption and mala fide use of the trade mark SUNLAC, the respondents had applied for an identical trade mark in
respect of the same goods or description of goods. Therefore, the impugned mark is wrongly registered and wrongly remaining in the register.
d. A false impression is being created in the minds of the public of a trade connection between the respondent and the applicant with a view to encash
on the hard earned reputation, skill, labour and goodwill of the applicant resulting in untold damages to them.
e. The impugned mark SUNLAC was neither distinctive at the time of registration nor has it acquired distinctiveness as it continues to be wrongly
remaining in the register. The registration of the impugned mark contravenes the provisions of Sections 9, 11, 12(1), 18 and 32 of the Trade Marks
Act, 1999. Further, the impugned mark is registered without any bona fide intention to use the same in relation to the goods for which it is registered.
Thus the registration of the impugned mark and its continuance in the register is a direct interference in the business of the applicant.
f. The existence of the impugned mark in the register affects the purity of the register of trade mark and as such it is remaining without sufficient
cause and requires to be expunged from the register forthwith.
The case of the respondent/registered proprietor is indicated below:-
a. The respondent is running an established business of manufacturing and marketing paints (including automotive paints), NC Putty, varnishes,
lacquers and other cognate and allied goods for the past several years.
b. The respondent is the true owner and legitimate proprietor of the trade mark ""SUNLAC"". Registration of the said trade mark having been granted
in Part A of the Register (under repealed Trade and Merchandise Marks Act, 1958) and the same being over 7 years old has become conclusive
under the law. Registration of the said trade mark has been renewed from time to time and is valid, subsisting and effective till date.
c. The respondent states that originally a partnership firm under the name SUNLAC PAINTS & CHEMICAL INDUSTRIES was established in
December, 1985 by one Ashwani Mehra and Vipin Kumar Malhotra. This firm adopted the firm name beginning with the word SUNLAC and the
trade mark SUNLAC was honestly and bona fidely adopted knowing well that there was no such or similar trade mark in use and/or in existence with
respect to the said goods. It is further submitted that late Mr. Satya Kant Mehra, father of Mr. Ashwani Mehra, who was one of the partners of the
said firm and one of the present directors of the respondent company was known, identified and called by his nick name Sunny. The mark SUNLAC
was coined by taking SUN from his nick/pet name and adding a common suffix LAC from lacquers. The said firm put the trade mark SUNLAC to
commercial use in December, 1985. An application for registration of the said trade mark SUNLAC in the name of the partnership firm was filed on
18/08/1986. The application was in due course advertised in the Trade Marks Journal No. 978 dated 01/03/1990 by the Registrar of Trade Marks.
None including the Applicants herein objected to its registration and the mark was registered in the name of the said partnership firm. The said
partnership was dissolved vide Dissolution Deed dated 31/03/1990 and Mr. Vipin Kumar left the said business and Mr. Ashwani Mehra took over the
running business along with assets, liabilities, goodwill as well as the trade name and trade mark SUNLAC. Mr. Ashwani Mehra incorporated the
respondent company and on 01.04.1991 passed on all his rights, titles and interests in the registered trade mark No. 458707 to the respondent company
as subsequent proprietor and the same was allowed by the Registrar. The respondent therefore is at present registered proprietor of the trade mark
SUNLAC.
d. The respondents have been promoting the sale of their goods under the impugned mark ""SUNLAC"" over the last two decades as is evidenced by
the yearwise sales particulars furnished below:-
e) On account of superior quality, continuous and extensive use of the impugned mark, it is identified exclusively with the respondent. The respondent
for the first time learnt of the use of the trade mark ""SUNLAC"" by the applicant after noticing advertisement of the applicant soliciting dealership
enquiry in the daily newspapers ""Sandhya Times"" dated 14th June, 2000. On enquiries they came to know that the goods of the applicant under the
impugned mark ""SUNLAC"" are already being sold by shopkeepers in Delhi. Further enquiries revealed that the applicant a few months prior to the
filing of the suit was using the trade mark 'ROYAL 555'. After noting the success of the respondent product bearing the impugned mark, they adopted
the same as the leading feature adding the earlier mark ROYAL 555 in an insignificant manner thereby tarnishing the reputation and goodwill of the
respondent products. Consequently, they filed an infringement suit and obtained a restraint order from the Hon'ble Delhi High Court. In due course it
was noted that the applicant continued to sell its products under the trade mark ""SUNLAC"" and accordingly the respondent moved a contempt
application. To obviate this, the applicant created another firm by the name SUNSHINE PAINTS at a nearby address of the applicant using the same
logo, trade mark and script. On noticing this, the respondent moved an application before the Additional District Judge, Delhi and Sunshine Paints had
been added as a defendant in the suit of the plaintiff.
f. The present application is bad in law due to the unreasonable, unexplained and inordinate delay as also laches and on the principles of acquiescence,
waiver and estoppel. The respondent is doing commerce under the impugned mark for the last 27 years and the applicant has never raised any
objection so far. The impugned mark was registered in 1991 after compliance with the due process of law in the name of the respondent. The
respondent filed a suit for infringement of registered trade mark and the applicant was restrained from using SUNLAC trade mark and is continuing
till date. The respondent have acquired enviable goodwill and impeccable trade reputation having pumped in substantial money, investment, funds, time,
energy and efforts in establishing the trade mark ""SUNLAC"" in the market. In view of the applicant's deplorable conduct the impugned application for
rectification deserves to be dismissed with exemplary costs. The present application is a complete abuse of process of law and is not maintainable as it
is based on false allegations.
g) On the merits of the case, the respondent state that the alleged user by the applicant since 1969-1970 is absolutely false, strongly disputed and
denied. Further the alleged sales figure of the applicant on a sheet of paper is no evidence at all and the figures do not pertain to the goods under the
trade mark ""SUNLAC"" and is therefore irrelevant and immaterial and cannot be relied on for the purpose of these proceedings. The respondents also
deny that they had full knowledge about the name, goodwill and reputation of the trade mark ""SUNLAC"" since 1969-70. The adoption and use of the
impugned mark by the respondent is honest and bona fide. The documents filed by the applicant on record do not support the allegations made by them
against the respondent and are therefore not admissible in law. These documents are made up, fabricated and cooked up by the applicant. The rest of
the counter statement is complete denial of all the allegations made against the respondent by the applicant.
The applicant has also filed a reply to the counter statement which is on record. It essentially reiterates the allegation made against the respondent
claiming to be the prior adopter of the impugned mark since 1969-70. In particular, the applicant states that they are manufacturing and marketing their
products only in Gujarat and never sold the same in Delhi and these advertisements and products have been created by them to prejudice and ruin
their rights and create bias against them before the Board. Accordingly, the averments made by the respondents are totally baseless and not to be
believed. The applicant repeats, reiterates and maintains whatever has been said in the rectification petition originally filed before the Hon'ble Delhi
High Court. The respondent had surreptitiously secured the registration of the impugned mark and non filing of opposition cannot be held against the
applicant as it was through inadvertence. The applicants have been using the impugned mark in Gujarat continuously, extensively and uninterruptedly
for the last 30 years. The respondents have no record of any business in the State of Gujarat and therefore the impugned rectification application
should be allowed.
The matter came up before us on 22nd August, 2013. We have carefully heard the arguments of both the respective counsel, gone through the
pleadings and records.
The following authorities were relied on by the applicant:-
(i) 2005 (30) PTC 233 (SC)-(Dhariwal Industries Ltd., & Another Vs. M.S.S. Food Products)-Reproduced from the headnote below:
Prima facie, it appears to us that the mark ""Malikchand"" was being used, though not much published by the original user, leading to the alleged
acquisition of the right to use the mark by the plaintiff. The defendants appear to have started the use of the mark ""Manikchand"" in a large scale at a
subsequent point of time. As noticed by the High Court, both sides had used their respective marks for some time. The litigation arose when the
defendants herein approached the High Court of Bombay seeking to prevent the use of the mark ""Malikchand"" by suing what they thought was the
proprietor of the business. It was then that the present plaintiff came forward with the suit seeking an injunction against the user of the mark
Manikchand"" by the defendants. To some extent it may be possible to conceive that the present suit by the plaintiff was a counter-blast to the suit
filed by the defendants in the High Court of Bombay; but at the same time, the point made by the High Court that the plaintiff probably was
apprehensive of its mark being annihilated, had approached the trial court for relief based on its prior user of the mark. It was in this context that the
High Court took the view that the application for interim injunction could not be rejected on the ground of delay and latches.
We are satisfied that the courts below cannot be said to have erred in thinking that the balance of convenience was in favour of the grant of interim
injunction in favour of the plaintiff. In any event, we are satisfied that a case for interference under Article 136 of the Constitution of India is not made
out in this case. We, therefore, decline to interfere with the order of the High Court and dismiss this appeal.
(ii) 2006 (33) PTC 281 (SC)-(Ramdev Food Products Pvt. Ltd., Vs. Arvindbhai Rambhai Patel & Others) Reproduced from the headnote below:
Trade mark-infringement-Ramdev Masala v. Ramdev Exports-Memorandum of understanding among parties-Licence given to use label and to trade
from outlets but not for the trade mark-When a right to use a trade mark is given, such a right can be exercised only in the manner laid down therein.
If in absence of any express licence or agreement to use its label the respondents use the self-same trade mark, the same would not only lead to
confusion but may also cause deception-Balance of convenience in favour of appellants-By reason of interpretation of MOU, trade mark cannot be
infringed and further when the right of user has been relinquished, the same could not have been claimed by the respondents-Respondents may carry
on their business in their own name and not by using trade mark of appellants-Injunction granted.
(iii) (1994) 2 SCC 448-(M/S. Power Control Appliances & others Vs. Sumeet Machines Pvt. Ltd.,) Reproduced from the headnote below:
Trade and Merchandise Marks Act, 1958-Sections 30(1)(b) and 105 -Implied consent to use of trade mark-Acquiescence-Meaning of-Applicability-
Interim injunction when should be issued-Family business of manufacturing a product under a brand name-Family members involved in the business by
having shares and directorship in all companies of the family-Son of the sole proprietrix of the appellant company was managing product but
subsequently commenced business of manufacturing the same product - Immediately thereafter suits filed by appellants before High Court alleging
infringement of their registered trade mark, copyright and designs-Both Single Judge and Division Bench of the High Court accepting the allegations of
infringement but taking the view that the various acts of the family members prima facie established implied consent and acquiescence-did not amount
to infringement-Infringement started with the commencement of manufacture and the suits having been filed immediately thereafter there was no
acquiescence-Mere averments in the plaint would not amount to implied consent-Use of trade mark by rival manufacturer not permissible and hence
there is no question of any implied consent-Even joint proprietors must use the trade mark jointly for the benefit of all-Quasi-partnership not pleaded-
Hence interim injunction should be issued.
(iv) I.L.R. (1976) I Del. 278-(M/S. L.D. Malhotra Industries Vs. M/S. Ropi Industries)
HELD further, that the word 'likely' is of considerable importance. It is not necessary that it should be intended to deceive or cause confusion. The
crux of the matter is not the intention of the defendant in taking a certain name but the probable effect of such action on the minds of the public.
However innocent may be his intentions, he will be restrained from trading under a name so much like that under which the plaintiff who was first in
the field trades, that the public are very likely to be deceived into systematic, and not mere occasional, confusion. It is its probable effect on ordinary
public, unwary purchasers and incautious persons which has to be considered. The essence of a trade mark is the association that it bears in the mind
of a potential buyer of the goods to which it is applied.
The following authorities were relied on by the respondents:-
(i) P.T.C.(Suppl) (1) 586 (SC) (National Bell Co. & Another Vs. Metal Goods Mfg. Co. (P) Ltd. & another)
The question is whether the trade mark ""50"" or ""Fifty"" is one which would otherwise be disentitled to protection in a court as laid down in clause (e) of
Section 11 so as to attract clause (b) of Section 32. While construing clause (e) of Section 11, it is necessary to repeat that it deals with prohibition and
not with requisites of registration. Therefore, although a mark cannot be registered for instance, because it is not distinctive as provided by Section 9,
such a mark is not for that reason only one the registration of which is prohibited by Section 11. The section lays down positive objective to registration
and not to mere lack of qualification. This is clear from clause (e) of Section 11, which uses the expression ""disentitled to protection"" and not the
expression ""not entitled to protection"". The former contemplates some illegal or other disentitlement inherent in the mark itself......
Section 9 laid down what a registrable trade mark must contain and unless it contained one or the other requisites there set out, it was not registrable
and it was only registrable trade marks which were entitled to registration. But even if a mark were to fall within Section 9, that alone was not
necessarily sufficient to entitle it to registration because it might offend against Section 11. Section 11, being a qualification of Section 9 and being a
provision laying down a prohibition, it did not contemplate any enquiry on the question whether the trade mark complied with one or the other requisites
enumerated in Section 9, e.g., whether it had the quality of being distinctive or not. Dealing with Section 11 he observed that it formed a new
departure in dealing with trade marks and differed widely from the earlier Acts. The present section expressly enacted that the original registration
shall, after a lapse of seven years be taken to be valid in all respects, that is to say, whether the mark originally consisted of or contained one or the
other essential proofs, or not, that cannot be enquired into after the lapse of seven years. It had to be taken to be valid in all respects and what had to
be taken to be valid in all respects was the registration of the trade mark unless it offended against the provisions of section 11. That section was a
prohibitive section as to a matter which was disentitled to protection in a court, that is, it was intended to exclude from registration what would
otherwise be included or covered under Section 9. It did not extend to a mark disentitled to protection because originally not containing one of the
essential particulars. It applied to a different set of circumstances such as that its use was likely to deceive or confuse, etc. The words ""disentitled to
protection"" he further observed, were not equivalent to ""not entitled to protection"", which was the expression used in the earlier Acts.
(ii) 2008 (37) PTC 413 (SC)-(Khoday Distilleries Limited (No known as Khoday India Ltd., Vs. Scotch Whisky Association & Others) Reproduced
from the headnote below:
Section 56 -Delay-Manufacture of Whiskey under the mark Peter Scot'-Rectification of trade mark after delay of 18 years Delay ex facie causes
prejudice to a manufacturer of a popular brand-Purity of register as also the public interest would indisputably be relevant consideration-when a
discretionary jurisdiction has been conferred on a statutory authority, the same although would be required to be considered on objective criteria but as
a legal principle it cannot be said that the delay leading to acquiescence or waiver or abandonment will have no role to play-Held that the action was
barred under the principles of acquiescence and/or waiver.
(iii) Law of Trade Marks & Passing Off by P. Narayanan 5th Edition Para 3.07
As between two parties who have made applications for registration of the same mark for the same goods; the prior applicant cannot be injuncted by
the subsequent applicant, whose use is prior to the use by the applicant. This is so especially when the prior applicant's use of the mark for cognate
goods is prior to the subsequent applicant's use.
(iv) 314 Bass Ratcliff & Gretton Ltd. Vs. John Devenport & Sons, Brewery Ltd. & (1902) 2 Ch. 579.
Romer, L.J. at page 539: I think it might fairly be said that after such a long uninterrupted user, and after the trade mark has been for so long a time
registered without attack, every reasonable intendment ought to be made by the Court in support of the registration. In the first places, it appears to
me that Messers Bass and Company ought not to be put, with regard to the trade mark, in a worse position because of its age and its simplicity, and I
should desire to say that the owner of an otherwise undisputed old trade mark, if of a simple form, is not to be held, of necessity, to have had his trade
mark made common to the trade because subsequent traders have, for the same class of goods, used without being stopped what I may call a
complicated trade mark or complicated trade marks, containing as one of their elements a copy of the old simple mark. The question ought to be, as it
appears to me, in each case, when you are considering two old marks, is the one substantially the same as the other for the purposes of a trade mark,
so that the two marks regarded as trade marks, are substantially undistinguishable in the trade? I think that is the principle on which you ought to come
to the consideration of such a question as we have to deal with in this case. I should like to observe also that when you are considering such a question
as I am referring to, as between the two old trade marks, the consideration that you ought to apply is not of necessity the same as when you have to
consider a new mark coming for registration for the first time, and its being opposed by an old trade mark. It appears to me that different
considerations may well apply to the second class of case to what would apply to the first.
(v) 412 Boord & Son Vs. Thom & Cameron Ltd; (1906) 23 RPC 509 (Outer House)
First Division of the Court of Session granted injunction and refused rectification: It was held inter alia that (1) When a trade mark has been registered
and has remained many years on the register there is an onus on a person alleging common user to prove that it should not have been put on the
register, which onus is not discharged by proving that there has been occasional user of the mark by others prior to its registration unless it is proved
that there has been sufficient trade under the mark to associate the goods of others therewith and that regarding the evidence as a jury would, such
trade had not been proved in the present case.
(2) Designs representing a cat and barrel though not closely resembling the cat and barrel in B & S's registered trade mark, were in view of the
evidence associating the ""Cat and Barrel"" with B and S's goods, infringement of their mark.
(vi) 553 A.G. Spalding & Brothers Vs. A.W. Gamage Ltd., (1915) 84 L.J. Ch. 449.
Even in the case of what are some times referred to as Common Law Trade Marks the property, if any, of the so-called owner is in its nature
transitory, and only exists so long as the mark is distinctive of his goods in the eyes of the public or a class of the public. Indeed, the necessity of
proving this distinctiveness in each case as a step in the proof of the false representation relied on was one of the evils sought to be remedied by the
Trade Marks Act, 1875, which conferred a real right of property on the owner of a registered mark. I had to consider the matter in case of Burberrys
v. Cording (26 P.R.C. 693) and I came to the same conclusion.
(vii) 86 (2000) DLT 181-(Om Prakash Gupta Vs. Parveen Kumar And another)
Learned counsel for the defendant has contended that in an action for passing off in order to succeed in getting an interim injunction, the plaintiff has
to establish continuous user of the trade mark prior in point of time than the impugned user by the defendant, and in this case though learned counsel
has contended that the plaintiff had started the use of this trade mark in 1973 but he used the same till about the year 1978 and as the plaintiff could
not make market in the trade mark or in this business he closed tobacco business did not use the same for about 20 years, i.e., till the year 1999 and
obviously the plaintiff had abandoned the trade mark, and thus lost right or prior user therein. Non-user for over 16 years is not denied by the plaintiff.
On the issue of 'person aggrieved' clearly the applicant are aggrieved by the presence of the respondent identical trade mark for identical goods on
the register. The respondent have filed a suit against the applicant for infringement and passing off. On the issue who is the first and true owner is a
matter of analysis and inquiry into the facts of the case? But this situation gave them the required locus standi to seek the removal of the respondents
trade mark from the register.
The case of the applicant in brief is that they are the prior adopter (1969) and prior user since (1971) of identical mark for identical goods. Despite
this the respondent have wrongly secured registration of the impugned mark claiming user from 1985. It is the case of the applicant that their products
under the trade mark SUNLAC were already in the market when the respondent applied for it. The application was actually filed by SUNLAC
PAINTS & CHEMICAL INDUSTRY but no documents to establish assignment of the mark has been furnished. The applicants state SUNLAC
PAINTS (P) Ltd. came into existence in 1988 and till 1990 the mark was not assigned. Therefore the registration granted is illegal and void. The
applicant further submits that the respondents who are in the same trade had full knowledge of the name, goodwill and reputation of the applicant. The
respondent products are not sold in Gujarat. The applicant have never sold their goods in Delhi but despite 30 years user in Gujarat of the trade mark
SUNLAC, the applicant are restrained from using their mark by an ex parte, injunction. This has been obtained by suppressing material evidence. The
impugned mark was applied for under 458707 in class 2 and registration effected in contravention of Sections 9, 11, 18 and 32 of the Act.
It is clear, the removal of the impugned mark is petitioned under Section 56(2) of the Act in that the entry is made in the register without sufficient
cause and the entry is wrongly remaining on the register. To succeed in an action under Section 56(2), the applicant has to show the registration is in
contravention of specific Section. In this case objections have been raised under Sections 9, 11, 18(1) and 32 of the Act.
We take up with objection under Section 9 of the impugned mark in SUNLAC. The explanation given about the impugned mark is it was adopted
and coined from the nickname of founder ""SUNNY"" father of the applicant viz., ""SUN"" as a prefix and suffix ""LAC"" from lacquer an ingredient in
paint business. The impugned mark clearly is a coined word and adopted to distinguish the goods of the respondent. It is an invented word and easily
qualifies for registration under Section 9(1) (c) of Trade and Merchandise Marks Act, 1958.
The next objection relates to Section 11(1) of the Act. It prohibited registration of trade marks which would be likely to deceive or cause
confusion. The applicants had not applied for the trade mark SUNLAC when the respondent had applied for and secured registration of SUNLAC.
When there was no identical or similar trade mark registered or pending, there was no material before the Registrar to make a determination under
Section 11(1). The respondents have produced copious documentary proofs like invoices of sale under the trade mark SUNLAC. In these
circumstances we get the impression both applicant and respondent are in the market. But apparently with efflux of time the respondent gained
greater popularity as evidenced by the huge turnover in recent times. There is some substance in the respondent plea that applicant tried to promote its
trade mark only after the respondent had build up enormous goodwill. In any event there is no basis for invoking Section 11(1) in the instant case and it
accordingly fails.
The next objection to be looked is under Section 12(1) of the repealed Act. That section prohibited registration of identical or deceptively similar
trade marks which is already registered in the name of a different proprietor in respect of the same goods or description of goods. The applicants
trade mark SUNLAC was neither registered nor pending at the relevant time. So, Section 12(1) cannot also be invoked in these proceedings.
The last of the objection relates to Section 32 of the repealed Trade and Merchandise Marks Act, 1958 and that section reads as follows:-
Registration to be conclusive as to validity after seven years.-Subject to the provisions of section 35 and section 46, in all legal proceedings relating
to a trade mark registered in Part A of the register (including applications under section 56), the original registration of the trade mark shall, after the
expiration of seven years from the date of such registration, be taken to be valid in all respects unless it is proved-
(a) that the original registration was obtained by fraud; or
(b) that the trade mark was registered in contravention of the provisions of section 11 or offends against the provisions of that section on the date of
commencement of the proceedings; or
(c) that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietor.
None of the proviso will come here to the rescue of the applicant in this case as there is no evidence of proved user by the applicant at the material
time before the Registrar as they were nowhere in the picture. If the applicant had a genuine case why did they not take statutory protection?
The power to remove a registered trade mark under Section 56(2) is discretionary. It should not be contrary to the general scheme of the Act.
None of the grounds raised under Sections 9, 11, 12(1) and 32 is a bar to the registration of the impugned mark. The impugned mark is on the register
for nearly 30 years and widely used. There is no genuine ground made out to remove the impugned mark under Section 56(2) of the Act. We watched
with great humor how the applicants became completely defensive once it became clear after the counter statement was filed by the respondent and
in reply thereto stated that the applicants have never entered Delhi or North India and have confined their business all along for 30 years only in
Gujarat. The respondents have acted tactfully in fending of its trade mark attack by following the simple business mantra-protect your brand name on
time and the applicants herein have to suffer for their own blameworthy conduct in not securing timely registration. In the result,
TRA/137/2004/TM/DEL is dismissed. There is no order as to costs.